There is no mechanical test for determining likelihood of confusion. The issue is
not whether the actual goods are likely to be confused but, rather, whether there
is a likelihood of confusion as to the source of the goods. In re Shell Oil Co.,
992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.
Each case must be decided on its own facts. Trademark Manual of Examining Procedure
(TMEP) 1207.01 Likelihood of Confusion.

Mechanical searches relying on international classifications to identify relatedness
are flawed because a difference in the classification of goods has no bearing on
the question of likelihood of confusion. The classification system is simply for
the convenience of the USPTO and has no bearing on the relationship of the goods.
See In re Leon Shaffer Golnick Advertising, Inc., 185 USPQ 242 (TTAB 1974). It is
the manner in which the applicant and/or registrant have identified their goods or
services that is controlling. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d
1771 (Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d
1212, 1216 n. 5 (TTAB 1990).

Conflicting Marks are Common Issues for Trademark Application Refusals, Oppositions
and Cancellations, and Infringement Suits

The claim of likelihood of confusion or conflicting marks–where a proposed mark so
resembles a previously registered or prior pending federal trademark as to be likely
to cause confusion, mistake, or deception is one of the most common grounds for a
USPTO trademark application refusal (along with lack of distinctiveness).

The USPTO does not search unregistered prior marks when deciding if a registrant
has a right to register. The USPTO only determines (during the registration process)
if the the potential trademark has a right against other registered or pending marks
(conflicting marks).

BUT the prior owners of registered and unregistered prior marks (“a mark or trade
name previously used in the United States by another and not abandoned”) have a right
to protest registrations of marks through oppositions or cancellations. Prior owners
may search the USPTO applications and registrations for potential harm that may result
from a registration and bring an inter partes (more than one party) action to oppose
that registration (see Publication for Opposition and Opposition Steps/Cancellation
Steps) or try to cancel already registered marks.

While not a common occurrence with respect to the total number of registrations sought,
the claim of likelihood of confusion or conflicting marks is also “the most frequently
encountered issue in Board inter partes proceedings [oppositions and cancellations].”
Trademark Trial and Appeal Board Manual of Procedure ((TBMP) 309.03(c) Grounds).
See Grounds for Opposition or Cancellation for more information on oppositions and
cancellations.)

[Inter partes proceedings before the Trademark Trial and Appeal Board are similar
to a civil action in Federal District Court. The Board is an administrative tribunal
with jurisdiction over the issue of registrability only.]

Opposition and Cancellations Proceedings (and infringement suits) can also be brought
by prior users under claims of Dilution.

Newcomers To A Market Should Be Careful In Selecting a Name

“In considering the similarity of the marks, it also should be kept in mind that
a party, in choosing a name or mark in a field already occupied, has an affirmative
duty to avoid all possibility of confusion with existing names and marks. Union Carbide
Corp. v. Ever-Ready Inc., 531 F.2d 366, 382 (7th Cir.), cert. denied, 429 U.S. 830,
97 S.Ct. 91, 50 L.Ed.2d 94 (1976). "A newcomer to a product field has a legal duty
to select a mark that is totally dissimilar to trademarks already being used in the
field." Jockey International, Inc. v. Burkard, 185 U.S.P.Q. (BNA) 201, 208 (S.D.Cal.1975).
“[N]ewcomers to a field of business have an infinity of nonconflicting names from
which to choose and have a duty to select a name which is totally dissimilar to a
trade name and trademark already being used for related goods. Watkins' Products,
Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496, 499 (7th Cir. 1962) as quoted
at 404 in St. Charles Mfg. Co. v. St. Charles Furniture Corp., 482 F.Supp. 397 (N.D.
Ill., 1979).

Trademark Searching and Clearance for conflicting marks and conflicting trade names
that may cause a likelihood of confusion refusal, opposition or cancellation, or
infringement suit is a good investment. Searching should be done BEFORE choosing
a mark to invest in (including beginning the registration process). An uninfringing
trademark can be a money and time saver as well as a way to avoid lawsuits. Call
Not Just Patents at 1-651-500-7590 for a quote on a verifying a trademark for use.

How Long Does it Take to Get A Trademark Registered?

Trademark applications with the USPTO that have no conflicting marks and that meet
all the legal requirements (including containing an acceptable specimen of the mark
in actual use) may register in as little as 7-8 months. The 2012 average time to
registration or abandonment was 10.2 months. (See the Not Just Patents web site TrademarkStatistics.com
for more information.) The status message APPROVED FOR PUB - PRINCIPAL REGISTER
appears about 4 months before the mark registers for a use-in-commerce mark that
is not opposed. The status message ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED for
intent-to-use applications appears about 6 weeks before the mark will register.

Trademark applications with conflicting marks or other issues may require significant
legal work and time to resolve the problems. The time to registration or abandonment
may be years.

Abandonment (from USPTO Glossary)-A trademark application that has been declared
abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances.
The most common reason is when the USPTO does not receive a response to an Office
Action letter from an applicant within 6 months from the date the Office action letter
was mailed. Another instance is when the USPTO does not receive a Statement of Use
(or request for an extension of time to file a statement of use) from an applicant
within 6 months from the issuance of a Notice of Allowance). Applications abandoned
for failure to respond to an Office Action or a Notice of Allowance can be revived
or reinstated in certain circumstances.

What does APPROVED FOR REGISTRATION SUPPLEMENTAL REGISTER mean? Applications on the
Supplemental Register do not publish for opposition but still go through the final
Official Gazette publication process. This message appears about 8 weeks before the
mark registers (and publishes).

*What does ‘TRAM Snapshot of App at Pub for Oppostn’ mean? It means that the trademark
application was approved by the examining attorney for publication for opposition.
This message is no longer used since the introduction of the USPTO’s new TSDR Trademark
Status and Document Retrieval but does appear on older records. The Trademark Snap
Shot Publication Stylesheet is a document, a table that presents the data on Publication
Approval. Sample of TRAM snapshot. This is NOT the beginning of the Opposition period.
Approximately two months after the trademark has been approved, it will receive a
publication date for its publication in the Trademark Official Gazette. A Notice
Of Publication postcard goes out to the applicant or the applicant’s representative
and that date of publication, always a Tuesday, will be the beginning of the opposition
period.

What is TRAM? The Trademark Reporting and Monitoring (“TRAM”) System . For applications
filed through TEAS, the data provided by the applicant is loaded directly into the
USPTO’s automated TRAM System. For applications filed on paper, the application documents
are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and
the data is manually entered into TRAM. TRAM is used by USPTO employees to obtain
information about the location and status, prosecution history, ownership, and correspondence
address for applications and registrations.

We suggest our service and our plan-a Not Just PatentsFive-Part Verification as
part of a Plan for A Strong Trademark:

To Verify a potential trademark is strong, available to use, and ready to register,
the process should be more than a direct hit federal search. To maximize the commercial
strength and minimize the weaknesses of a trademark, a potential trademark user should:

A strategic, narrow, and precise goods and services description on an initial application,
made as a result of a thorough trademark search may result in no likelihood of confusion
as to source, and similar marks can co-exist. Amending in a Response to Office Action
(ROA) to a strategic, narrow, and precise goods and services description on a refused
application may overcome a likelihood of confusion as to source, and similar marks
can co-exist.

Not every refusal has an answer that will overcome the refusal: some proposed trademark
applications just do not comply with U.S. Trademark Law and do not qualify for common
law protection because they are conflicting marks, lack distinctiveness or lack acquired
secondary meaning or the capability of acquiring secondary meaning. Sometimes a new
application can solve the problem, sometimes the mark must be incorporated with other
elements to add distinctiveness.

If your trademark has value and you want to preserve the trade identity rights that
you have already invested and secure more rights through federal registration, the
cost of having a Not Just Patents ® Legal Services provide your Response to Office
Action (ROA), Amendment to Allege Use (AAU), or Statement of Use (SOU) may be less
than what you think and the time saved may be months or years. Our application fees
are less than average but our results are very good. We would be happy to compare
our fees and success to another firm-call us with a name and a quote.

According to the AIPLA Report of the Economic Survey 2009, on average, law firms
charge $1,440 to perform a trademark clearance search, analysis, and opinion, $867
to prepare and file a trademark application, and $1,678 for prosecution of a trademark
registration. A Five Step Verification, application, and prosecution by Not Just
Patents® Legal Services usually costs less than even one of these fees and we have
a high success rate. Our trademark goals are to register strong trademarks, have
long term clients, repeat business, and good referrals. Help us to meet our goals
and we can help you to meet yours.

Not Just Patents ® and Aim Higher® are registered trademarks of Not Just Patents
LLC for Legal Services.

Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or
Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications;
Send or Respond to Cease and Desist Letters.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes
only and is provided without warranties, express or implied, regarding the information's
accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client
relationship exists without a written contract between Not Just Patents LLC and its
client. Past performance is no guarantee of future results. Privacy PolicyContact
Us